Substantive Patent Law Harmonisation

On 24 May, CIPA submitted its response to the Group B+ Working Group on Substantive Patent Law Harmonisation user association consultation. The consultation was a questionnaire with a series of multiple-choice responses. The responses selected by CIPA are listed below in blue. The full questionnaire is available here. The comments were prepared by Tony Rollins (Fellow).

In answering these questions, participant associations were urged to consider the issues from the point of view of the patentee as well as the point of view of third parties.

General

1. Does your association support the goal of substantive patent law harmonisation (‘SPLH’)? Yes

2. How flexible are you in relation to SPLH? We want SPLH, and realise that to achieve international harmonisation, compromises will be necessary. We are prepared to be flexible and change our own law, as part of a balanced harmonisation package (on definition of prior art, grace period, 18-month publication, conflicting applications and prior user rights), to be able to enjoy the benefits of harmonisation.

Grace period

3. Is your association in favour of an internationally harmonised grace period? Yes

4. When should the internationally harmonised grace period be calculated from:

The filing date, or, if applicable, the priority date.

5. Should there be a statement requirement? Yes, a mandatory statement requirement with a time limit.

6. Assuming that there is a statement requirement and it is provided that the grace period should be invoked upon filing, with supporting documents filed within a month or two of filing, how strict should these time limits be? [Note: Where a statement is required, if filed early enough in the patent granting procedure, it will both provide procedural efficiencies and reduce costs for both applicants and patent offices.]

The statement that the grace period is claimed and the supporting documents may be filed, amended or completed up until 16 months from the priority or filing date, subject to an additional fee, ensuring that the statement is complete prior to the publication of the application.

7. Some argue that if a grace period becomes internationally harmonised, safeguards (a statement requirement and/or robust prior user rights) are required to preserve the “file first, disclose later” paradigm to promote stability within patent systems and ensure that the grace period will be used as a “safety net” rather than as a strategic option.

Please indicate the grace period safeguards you would prefer. A grace period with: Both a statement requirement and robust prior user rights.

8. You have indicated your preferred grace period safeguards in question Should these safeguards not be a feasible outcome in an international negotiation, please indicate the other concept(s) which would be acceptable to your association as a compromise. A grace period with: (Should more than one concept be acceptable, please rank the concepts in order of preference…)

Both a statement requirement and robust prior user rights.
A statement requirement.
“Robust prior user rights”, where third parties may obtain prior user rights if they have derived knowledge of the invention from a pre-filing disclosure made during the grace period by the applicant or their predecessor, or with their consent.

9. Do you agree with the following statement: intervening disclosures of independent inventions by third parties form prior art? Yes

10. Do you agree with the following statement: the burden of proof to show that a pre-filing disclosure is graced should rest on the applicant? Yes

11. Would your association support accelerated publication? [Note: Some users have proposed a system of accelerated publication, so that when the grace period is invoked for a patent application, the application would be published 18 months from the date of the first pre-filing disclosure. This pre-supposes a statement requirement in order to invoke the grace period.] Yes

12. In the following circumstances, how often would you choose to use the grace period:

a. If an international grace period were to contain a statement requirement? No consensus

b. If an international grace period were to allow third parties to acquire prior user rights based on knowledge of the invention derived from a pre-filing disclosure made during the grace period by the applicant or their predecessor, or with their consent (‘robust prior user rights’)?No consensus

c. If an international grace period comprised both a statement requirement and robust prior user rights?No consensus

d. If an international grace period did not require a statement and prohibited prior user rights from arising where knowledge of the invention has been derived from the applicant?No consensus

Conflicting applications

13. Which system do you believe represents best practice?

Conflicting applications are relevant for the examination of novelty only, without anti-self-collision

14. You have indicated your preferred system in question 13. Assuming that your first choice is not a feasible outcome in an international negotiation, please indicate the system(s) which would be acceptable to your association as a compromise? No consensus

15. Regarding the ‘distance’ between applications, please indicate the concept which is preferred by your association. No consensus

16. You have indicated your preferred ‘distance’ between applications in question 15. Assuming that your first choice is not a feasible outcome in an international negotiation, please indicate the concept(s) which would be acceptable to your association as a compromise. Enhanced novelty

17. Do you support the principle of anti-self-collision? [Not answered.]

18. You have indicated your preference with regard to the principle of anti-self-collision in question 17. Assuming your preference is not a feasible outcome in an international negotiation, would the opposite alternative be acceptable to your association as a compromise? [Note: it being understood that the resulting approach would in any event allow incremental inventions to be protected.] [Not answered.]

19. Please answer either question 19A or 19B, depending on the law in your own jurisdiction.

A. If your jurisdiction at present has a rule on anti-self-collision, and it were to change to a system without anti-self-collision, how would this impact the patent system?
[Not answered, see below.]

B. If your jurisdiction at present has no rule on anti-self-collision, and it were to change to a system with anti-self-collision, how would this impact the patent system?
It would not significantly change the patent system

20. If an international package contained an anti-self-collision clause, would you support the adoption of terminal disclaimers? Yes

21. If an international package contained an anti-self-collision clause, would you support the feature of a single patent issuing to the same applicant, where the applicant must choose which of the two applications shall proceed to grant? Do not wish to answer

22. PCT applications should become conflicting applications:

Upon their publication at 18 months, regardless of whether they enter the national/regional phase or not.

Prior user rights

23. In a grace period context, the issue of derivation of the knowledge of the invention from the applicant by third parties arises. Please check the statement you agree with.

Prior user rights should be able to arise where the knowledge of the invention has been derived from a pre-filing disclosure made by the applicant or their predecessor, or with their consent, during the grace period, but not if it was derived from the applicant otherwise

24. Where a prior user has acquired knowledge of the invention from another person (i.e. the applicant or a third party), should there be a standard of behaviour for prior user rights to arise, which, by its nature, would apply to the prior user’s dealings with any third party, not just the applicant?

Yes, there should be a standard of behaviour for prior user rights to arise e.g. to prevent prior user rights from arising where the invention has been obtained in breach of confidence from a third party who made the invention but is not the applicant

25. If a general standard of behaviour were to be imposed on the prior user, it should be a requirement that the prior user has acted:

‘Legitimately’, i.e. not contrary to law, or in breach of confidence or any other contractual obligation

Additional comments

26. Please include any comments you wish to add below.

In relation to Question 6, we believe that there needs to be a safety net for unintentional disclosure, providing the applicant can substantiate why the disclosure was unintentional.
We found no consensus on Question 12 (a), (b), (c) and (d) because our members may hold different positions and their answers may differ depending on their technical field.
On Question 14, we believe compromise will be needed between the present systems. In relation to Questions 17 and 18, we would support anti-self-collision as a compromise.
In relation to Question 19 B. if our jurisdiction was to change to a system with anti-self-collision, we believe it would benefit the patentee and would be pro-innovation.
Regarding Prior Users Rights, we feel that there should be a clear definition of the scope of PURs, including expansion of volume and expansion of type of use.

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